The Current Unsettled State of Inherent Anticipation at the Federal Circuit

Abstract

Inherency is one of the most confusing and difficult doctrines of patent law. While the patent system quid pro quo requires an invention’s disclosure in return for twenty years of exclusive patent rights, technologies may have unrecognized or unappreciated qualities that, consequently, are not explicitly disclosed. These “inherent” aspects are treated under the law as if they are expressly disclosed by the prior art.

The Federal Circuit case law is currently unsettled with respect to both the inevitability and the knowledge requirements for inherent anticipation. In addition, in recently emphasizing the enablement requirement for anticipation with more regularity and vigor, a standard may be evolving at the Federal Circuit that implicitly requires knowledge by one of skill in the art as prerequisite for enablement. While the public benefit theory for finding inherent anticipation has merit, it has yet to find expression in a Federal Circuit opinion.

A review of the panels who have heard inherent anticipation cases suggests that Judge Newman is a particularly strong advocate of requiring both inevitability and knowledge to support inherent anticipation. While patent practitioners may find this doctrinal uncertainty disconcerting for their day-to-day interactions with the Patent Office, the ambiguity nevertheless provides applicants with multiple arguments to make against an examiner who rejects claims based on inherent anticipation. Because the doctrine may depend in part on which judges compose any particular panel hearing a case, the requirements for finding inherent anticipation will remain unclear until settled by an en banc decision.

Keywords: Federal Circuit, inherency, anticipation